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A Practical Guide
casselsbrock.com
Intellectual Property
Trademarks
Copyright
Patents
Industrial Designs
French Language Considerations
Trade Secrets
Domain Names
Canada has a comprehensive legislative scheme to protect trademarks, copyright, patents and
industrial designs.
Trademarks
The Federal Trademarks Act (the “TMA”) grants exclusive rights to trademark owners and
provides public notice of those rights. Canadian trademark law provides protection for both
registered and unregistered trademarks. The Government of Canada recently passed significant
amendments to the TMA. Those amendments, which are anticipated to be implemented in late
2015 or early 2016, are set to fundamentally transform the Canadian regime.
The amended TMA defines a trademark as “(a) a sign or combination of signs that is used or
proposed to be used by a person for the purpose of distinguishing or so as to distinguish their
goods or services from those of others, or (b) a certification mark,” with the word “sign” being
separately defined as including “a word, a personal name, a design, a letter, a numeral, a colour, a
figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging
goods, a sound, a scent, a taste, a texture and the positioning of a sign.”
i. Registered Trademarks
a) Scope and Term
The TMA provides the owner of a registered trademark with nationwide protection for the mark as
registered. Unless it is challenged as discussed below, a Canadian trademark registration is valid for
15 years from the date of registration, although the new TMA shortens this term to ten years. The
term is renewable for subsequent fifteen (or, after the new TMA comes into force, ten) year periods.
Doing Business In Canada: Intellectual Property9.1
b) Filing Basis
While the current Act provides for several application grounds, under the new TMA, an application
to register a mark may be filed if the applicant uses or intends to use the trademark in Canada. Under
the new TMA, an applicant does not need to identify when its mark was first used in Canada or file a
declaration post-allowance stating that a mark is in use before it will issue to registration.
The TMA also provides for applications based on foreign priority. If an applicant with a pending
application in its country of origin (and that country is party to the Paris Convention) applies to
register the same or substantially the same trademark in Canada for use in association with the
same kind of wares or services within six months from the date of first filing, then the date of filing
in that country becomes the effective Canadian filing date. Foreign priority must currently be
explicitly claimed within the six-month window in order to be valid. The new TMA provides for
the possibility of a short extension.
The new TMA also provides for Canada to become a party to the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks, or the “Madrid Protocol.” Once
the Madrid Protocol is implemented by government regulations, this will allow applicants to
obtain protection in Canada by filing an “international application,” as is currently allowed in
jurisdictions such as the United States and Europe.
c) Goods & Services
An application must contain a statement, in ordinary commercial terms, of the goods or services in
association with which the trademark has been (or is proposed to be) used. The amended TMA
provides that the listing of goods and services in a Canadian application are to be grouped
according to the classes of the Nice Classification system, much like in countries such as the
United States. Currently, there is considerable uncertainty as to how this new requirement will be
implemented. For example, it remains to be seen whether Canada will adopt a class-based filing
fee structure or whether the Registrar of Trademarks (“the Registrar”) will require owners of
existing registrations to re-classify the goods and services according to the classification codes.
d) Examination & Opposition
Once filed, a trademark application undergoes examination with the Canadian Intellectual Property
Office (“CIPO”). In addition to reviewing the application for technical compliance with the
provisions of the TMA, an examiner will conduct a search of the Canadian register to assess
whether the mark is registrable and whether the applicant is entitled to seek registration. Examples
of registrability and entitlement issues include:
»» The mark is likely to cause confusion with an existing registration or pending application;
»» The mark too nearly resembles a prohibited mark or designation (discussed below);
»» The mark is primarily merely the name or surname of an individual who is living or has died
within the past 30 years; or
»» The mark is clearly descriptive or deceptively misdescriptive of the character or quality of
the associated goods or services of the conditions of or the persons employed in their
production or of their place of origin.
The new TMA also permits the examiner to consider whether or not the trademark actually
distinguishes or is capable of distinguishing the goods and/or services of the applicant from those
of others. In this regard, draft regulations to the amended TMA propose that the Registrar will be
entitled to receive correspondence from a third party other than the applicant any time before
advertisement. If the third party submission is pertinent, the examiner will be required to forward
that correspondence onto the applicant. The examiner then issues a report outlining any objections
9.2 Doing Business In Canada: Intellectual Property
to the application, typically within six to eight months of the filing date. The applicant then has an
opportunity to amend the application or argue against any objections.
If the examiner raises no objections or if the applicant overcomes any objections raised, the
application will be approved and advertised in the Trademarks Journal. During the two-month
period after advertisement, any third party may oppose the application based on several grounds
including deficiencies in the application itself, the fact that the trademark is not registrable and/or
distinctive, or the fact that the applicant is not the person entitled to registration. If there are no
successful oppositions, the application will issue to registration on payment of a registration fee
and filing of a declaration of use (if applicable).
e) Summary Cancellation of Registrations
Section 45 of the TMA provides a summary procedure for determining whether a registration is
actually in use. If a trademark owner has not used a registered trademark in Canada within any
three-year period following registration, the registration can be summarily expunged. This
procedure is not intended to create or rescind substantive rights; rather, the procedure is designed
to clear “dead wood” from the Canadian register.
f) Enforcement of Registered Trademark Rights
Both the Federal Court and provincial courts have jurisdiction to hear and determine an action or
application for trademark infringement provided the infringement does not take place wholly abroad.
A plaintiff who is ordinarily resident outside of Canada may be ordered to pay security for the
defendant’s costs; either in lump sum or on a scheduled milestone basis. However, applications or
counterclaims seeking to expunge a registered trademark can only be advance in the Federal Court.
ii. Unregistered Trademarks
Canadian law also recognizes common law trademark rights acquired through actual use of an
unregistered mark in Canada in association with goods or services. The owner of such a mark may
assert claims against others who use confusing trademarks in the specific region or area where the
common law trademark owner has built up goodwill, even if the mark is not used in Canada. This
type of claim is referred to as “passing off” and is recognized both in the Canadian common law
and under the TMA.
A claim for passing off at common law is restricted to the area in which the plaintiff can establish
the existence of goodwill. An action for passing off under the TMA may be brought in the Federal
Court or in a provincial court of competent jurisdiction. As with any other enforcement proceeding
in Canada, a plaintiff who is ordinarily resident outside of Canada may be ordered to pay security
for the defendant’s costs.
iii. Prohibited & Official Marks
Canadian trademark law has a unique regime for certain marks adopted by public authorities,
universities and certain other organizations. Specifically, the TMA prohibits the adoption, which
includes use and application for registration, of a variety of regal, governmental or public words,
crests, symbols, marks or other devices. No person may adopt — in connection with a business
— as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to
be mistaken for, a prohibited mark.
Prohibited marks that are adopted and used by a public authority as a mark are termed “official
marks.” Public notice of adoption and use of an official mark does not retroactively prohibit the
use of an existing mark; however, it does preclude the expansion of an existing registration to
additional wares or services, or the registration of any pending application which was not
registered at the time of the publication of the official mark, even if previously adopted, used and
applied for.
Doing Business In Canada: Intellectual Property9.3
iv. Prohibited Designations
Section 10 of the TMA states that where a mark has by ordinary and bona fide commercial usage
become recognized in Canada as designating the kind, quality, quantity, destination, value, place
of origin or date of production of any wares or services, no person shall adopt it as a trademark in
association with such wares or services or others of the same general class or use it in a way likely
to mislead.
Copyright
The federal Copyright Act governs rights associated with copyright law in Canada. Copyright
protects the owner of a work from the unauthorized production or reproduction, public
performance, or publishing of musical, literary, dramatic and artistic works. The Act also protects
various rights in performances, communication signals and sound recordings. Additionally, an
author is granted moral rights in the work, including the right to integrity of the work and the right
to be associated with the work as its author. Copyright protects the material expression of an
author’s original work, and does not extend to the protection of ideas or concepts.
Copyright protection commences upon creation and fixation (i.e., establishment of the work into
some material form) of the work. However, with exceptions, there is a residency requirement in order
to be afforded protection. The author must have been a citizen of or ordinarily resident in Canada, or
a treaty country, at the time of creation of the work. A treaty country includes parties to the Berne
Convention, the Universal Copyright Convention and members of the World Trade Organization.
Although registration of copyright is not required, an optional and inexpensive registration
application provides a certificate of registration, which evidences ownership and subsistence of the
copyright. This may create a presumption that an infringer has knowledge of the existence of a
copyright. Additionally, it is common practice to mark a work with a copyright symbol. The
appropriate mark is the symbol “©” along with the name of the copyright owner and year of first
publication. In general, copyright subsists in Canada for 50 years following the end of the calendar
year of the author’s death, or last author’s death in the case of joint-authorship. Moral rights
subsist for the same term as the economic copyright in the work.
Ownership of a copyright may vary, depending on the circumstances. In general, the author of a
work is the first owner of the copyright. Of note is that in Canada we do not recognize the concept
of a “work made for hire” as it exists in other jurisdictions, like the United States. However, if the
author is an employee and creates the work during the course of his or her employment, the
employer can be the first owner of the copyright. There are exceptions to the employment rules
under the Act, such as where the work is an article or a contribution to a newspaper, magazine or
periodical. Additionally, copyright may be assigned or licensed. Any transfer in ownership must be
in writing and should be recorded with CIPO. Note that moral rights may not be assigned, but they
may be waived, in whole or in part.
Infringement occurs if a person, without consent of the copyright owner, acts contrary to the Act
or infringes the moral rights of the author. Third parties may also be subject to secondary
infringement liability if they sell, rent, distribute or import a copy of the work that they ought to
have known infringes copyright or would infringe copyright if it had been made in Canada.
However, there are numerous statutory exceptions to infringement under the Act, some of which
include: fair dealing for the purpose of research, private study, education, parody or satire; news
reporting; non-commercial user-generated content; reproduction for private purposes; reproduction
for instruction; and creation of backup copies. Additionally, it is not an infringement if an
impugned work is in the public domain. Available remedies include temporary and permanent
injunctive relief, damages (including statutory damages), rights to profits earned by the infringing
party, delivery up and destruction of infringing works and punitive damages.
9.4 Doing Business In Canada: Intellectual Property
Patents
The federal Patent Act governs Canadian patent law and the rights associated with protecting
inventions. The grant of a patent to a person by the Patent Office of CIPO excludes others from
making, constructing, using or selling the patented invention in Canada. A patent is, in other
words, a government-issued monopoly to a claimed invention in exchange for disclosure of that
invention to the public.
In order for an invention to be patentable, it must comprise patentable subject matter and be novel,
useful, and non-obvious. To be novel (and thus unanticipated), an invention must not have been
previously disclosed to the public in Canada or elsewhere. The exception to this rule is that if the
patent applicant was the one who made the first disclosure, then the applicant may file a patent
application within one year of the that disclosure. To be useful, the invention must be functional.
Mere scientific principles or abstract theorems cannot be patented. Finally, the invention cannot
have been obvious (i.e., there must be an inventive step) to a person skilled in the art or science to
which the invention relates.
There is no protection for unregistered rights to an invention, so a patent application must be filed
with CIPO either as a domestic Canadian patent application or pursuant to a timely national phase
Canadian entry under a Patent Co-Operation Treaty (“PCT”) patent filing for the invention. A
complete application will include a statement that a patent is being sought, the applicant’s
background information, a clear and full description and drawings of the invention, the intended
operation or use of the invention, a claim or claims to the invention setting out the monopoly
sought, and a filing fee. If the information required for a complete application is not available,
certain minimal requirements are necessary for an applicant to be granted an official filing date.
Canadian patent registration works on a first-to-file basis and, therefore, receipt of an official filing
date is crucial.
After filing, a request for examination, along with necessary fees, must be made within five years
of the filing date. This is necessary in order for CIPO to review the application. If the five year
period expires, CIPO will not review the application and will consider the application abandoned.
The applicant would then be required to make a request for reinstatement.
Similar to the Canadian law of trademarks discussed above, filing applications in various countries
is facilitated by Canada’s membership as a party to the Paris Convention. The filing date of an
application in one country will be recognized by other member countries, as long as a subsequent
filing is made in the desired countries within one year of the first “priority” filing. Consequently,
various filings in different countries and at separate times will all be subject to the first filing date.
Canada is also a member state to the Patent Co-Operation Treaty, and many Canadian patent
applications find their genesis in national phase Canadian entry notifications under PCT patent
applications (Canadian national phase entry having to be elected within 30 months of the earliest
claimed priority date in the corresponding PCT application).
Once a patent is granted, it has a non-renewable term in Canada of 20 years from the filing date.
Although not required by the Act, it is common practice to mark a work with a patent number or
“patent pending” symbol. However, it is illegal to mark an article as patented when it has not yet
been granted a patent.
Patent infringement occurs if a person makes, constructs, uses, or sells a patented invention
without the permission of the patent owner within the granting country. Remedies for infringement
may include damages, profits earned by the infringing party as a result of the infringement,
delivery up and destruction of infringing goods, injunctions and, uncommonly, punitive damages.
Doing Business In Canada: Intellectual Property9.5
Where primary infringement is found, those who encouraged or solicited the infringement may
also be found liable for inducing infringement. As well, importing into Canada goods that were
legitimately produced off-shore but that might have infringed a valid Canadian process patent had
they been made in Canada may also expose the importer or user in Canada to a patent
infringement claim.
A patent may be assigned and licensed in whole or in part. To be fully effective, an assignment or
license must be in writing and should be recorded with CIPO.
Industrial Designs
The federal Industrial Design Act (the “IDA”) affords protection to industrial designs in Canada.
An industrial design is a visual, non-utilitarian feature of a finished article, including shape,
configuration, pattern or ornament. The IDA does not protect ideas, features of an article that
solely serve a utilitarian function, or materials or methods used in the construction of the article.
To make a legal claim of ownership in Canada, an industrial design must be registered under the IDA
with the Industrial Design Office. Registration provides an exclusive right to the industrial design for
a non-renewable 10 year term. The full 10 year term is subject to payment of maintenance fees prior
to the expiration of five years from the date of registration. Non-payment of maintenance fees may
result in the expungement of the registration under the IDA. Registration prevents others from
making, importing for the purposes of trade or business, selling, or renting any article that is not
substantially different from the article subject to the registration. At the expiry of the 10 year period,
anyone may make, import, sell or rent the industrial design within Canada.
An application to register must be filed with CIPO by the current proprietor of the design along
with appropriate application fees. If the article associated with the design has been published, in
Canada or elsewhere, the application for registration must be made within one year of publication.
The “current” proprietor can be either the first or subsequent owner of the design. The first
proprietor is the author of the design, or the person for whom the design was executed for good
and valuable consideration. A subsequent proprietor is a person who acquired ownership of the
design from the first (or later) proprietor. The registration application includes a declaration that
the applicant is the proprietor and that, to their knowledge, the design had not been used by
another person. If the design was jointly created, the designers may register as joint proprietors.
To be registered, a design must be original. An accurate description of the design and article to
which the design applies must be included in the registration application. The description must
include the features of the design and where they reside on the article, along with at least one high
quality drawing or photograph of the design as applied to the finished article. Drawings or
photographs must display the completed article in full.
Although not required, after registration is complete, a product may be marked to indicate that it is
registered as an industrial design. Without a mark, remedies for infringement may be limited to
injunctive relief, as a defendant can argue that they were unaware and had no reasonable grounds
to suspect that the design was registered. In general, a registrant may enforce their rights against
any person who infringes the registered industrial design in Canada. Legal action must be brought
within three years of the alleged infringement. Remedies for infringement may include damages,
profits earned by the infringing party as a result of the infringement, delivery up and destruction of
infringing goods, injunctions and, uncommonly, punitive damages.
As with the other forms of intellectual property discussed above, industrial designs may be
assigned or licensed. Any transfer in ownership should be recorded with CIPO. Assignments may
be recorded against both pending and registered designs.
9.6 Doing Business In Canada: Intellectual Property
French Language Considerations
The Québec Charter of the French Language generally requires that commerce and business in
Québec be conducted in French. Firm names, product labelling, publications, contracts, signs,
posters and commercial advertising must be written in French. A corporation may, in public
posting and commercial advertising, use a trademark in a language other than French if such
trademark is recognized (i.e., registered) under the TMA and a French version of it has not been
applied for or registered in Canada. A corporation may also use a trademark in its business name in
a language other than French under similar circumstances provided that a French generic term
describing the nature of the business is included in the business name.
Trade Secrets
Trade secret rights that do not fall within the protections outlined above must be created by private
contract. Also, at common law, certain relationships (i.e., employment relationships) may require
confidentiality.
Domain Names
A domain name is an identification label that identifies protocol resources on the Internet. The
Internet Corporation for Assigned Names and Numbers (“ICANN”) manages the top-level
development and architecture of the Internet domain name space. It authorizes domain name
registrars, through which domain names may be registered and reassigned. Recently, ICANN
began allowing anyone to apply for and, subject to ICANN approval, administer new generic top
level domains, or “gTLD”s. There are, as a result, a virtually unlimited number of gTLDs
available to be registered.
Doing Business In Canada: Intellectual Property9.7
About
Canada
Dispute
Resolution
Foreign
Investment
Aboriginal
Law
About
Cassels Brock
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